OPPOSITION No B 3 026 294

ITI Group Ltd, Simmond House The Green Sarratt, WD3 6AT Rickmansworth, United Kingdom (opponent), represented by Lucas & Co, 135 Westhall Road, CR6 9HJ Warlingham, United Kingdom (professional representative)

a g a i n s t

ITI Capital Limited, Level 33, Tower 42, 25 Old Broad Street, EC2N 1HQ, London, United Kingdom (applicant), represented by EIP, Fairfax House 15 Fulwood Place, WC1V 6HU London, United Kingdom (professional representative).

On 20/11/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 026 294 is upheld for all the contested services, namely:

Class 42: Software development, programming and implementation; IT consultancy, advisory and information services; hosting services and software as a service and rental of software.

2. European Union trade mark application No 17 395 716 is rejected for all the contested services. It may proceed for the remaining services.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against some of the services of European Union trade mark application No 17 395 716 for the word mark ‘ITI Funds’, namely against all the services in Class 42. The opposition is based on United Kingdom trade mark registration No 3 138 841 . The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

a) The goods and services

The goods and services on which the opposition is based are, inter alia, the following:

Class 42: Computer software design and development; design and development of computer software including investment methodology software, financial portfolio analysis and optimisation software, financial data visualisation software, account aggregation and personal money management software; providing temporary use of on-line non-downloadable software for analysing financial data; providing temporary use of on-line non-downloadable software including investment methodology software, financial portfolio analysis and optimisation software, financial data visualisation software, and account aggregation and personal money management software; software as a service.

The contested services are the following:

Class 42: Software development, programming and implementation; IT consultancy, advisory and information services; hosting services and software as a service and rental of software.

An interpretation of the wording of the above list is required to determine the scope of protection of these services.

The term ‘including’, used in the opponent’s list of services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Software development and software as a service are identically contained in both lists of services despite the different wording as computer software development in the opponent’s list of services.

The contested software programming and implementation are included in the broad category of the opponent’s computer software development. Therefore, they are identical.

The contested rental of software overlaps with the opponent’s providing temporary use of on-line non-downloadable software for analysing financial data since providing a temporary use may be in form of rental and on-line non-downloadable software for anything is a kind of software. Therefore, they are identical.

The contested IT consultancy, advisory and information services are at least similar to the opponents’ computer software design and development as they coincide in producers, relevant publics and distribution channels. Furthermore they are complementary.

The contested hosting services are similar to the opponent’s computer software design and development as they usually coincide in producer, relevant public and distribution channels.

b) Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the services found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, or terms and conditions of the services purchased.

c) The signs

	ITI Funds
Earlier trade mark	Contested sign

The relevant territory is the United Kingdom.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The verbal element ‘ITI’ of the earlier mark and of the contested sign has no meaning for the relevant public and is, therefore, distinctive.

The figurative element of the earlier mark consists of thick lines of different colours displayed in a circle. This device may be associated with a fanciful sun by a part of the relevant public. In any event, the figurative element will not be related with the relevant services and is, therefore, distinctive.

It should be noted that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

The element ‘FUNDS’ of the contested sign will be understood by the relevant public as, among other meanings, ‘the money at the disposal of a person, organization, etc.; financial resources’ (information extracted from Oxford English Dictionary on 14/11/2018 at http://www.oed.com). Bearing in mind that the relevant services are software-related, this element describes the intended purpose of the services in question, therefore is a weak element.

Despite the relatively big figurative element in the earlier mark, it is considered that there is no element that could be considered clearly more dominant than other elements in this mark.

Visually, the signs coincide in the distinctive element ‘ITI’. However, they differ in the word ‘FUNDS’ of the contested sign which is a weak element and in the figurative element of the earlier mark considered of a normal degree of distinctiveness.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the syllables ‛I‑TI’, present identically in both signs. The pronunciation differs in the syllable ‛FUNDS’ of the contested mark, which is a weak element.

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the part of the public for which the earlier mark does not have any meaning, the signs are not conceptually similar. For the part of the public for which this element has a meaning, as the signs will be associated with a dissimilar meaning, the signs are conceptually not similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

A likelihood of confusion (including a likelihood of association) exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically-linked undertakings.

The contested services have been found partly identical and partly similar to the opponent’s services in Class 42. They are directed at the public at large and at professional public. The level of attention is considered to vary from average to high. The earlier mark has a normal degree of distinctiveness.

The marks are visually similar to an average degree, aurally similar to a high degree and conceptually they do not have a concept in common.

Bearing in mind all of the above, it is considered that the differences between the signs are not sufficient to counteract the similarity residing in the common element ‘ITI’. The other, differing, elements of the signs are of weak nature or have less impact on the public’s perception than the coinciding element ‘ITI’.

Furthermore, while it is possible that the public may not directly confuse the signs in question, the Opposition Division deems it likely that indirect confusion in the form of likelihood of association may occur. Indirect confusion results when the relevant public is able to distinguish between the marks, but may still believe that the goods and/or services they cover originate from the same undertaking or from economically-linked undertakings. In the present case, the contested sign could be perceived as a new line of services of the opponent.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s United Kingdom trade mark registration No 3 138 841. It follows that the contested trade mark must be rejected for all the contested services.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Manuela RUSEVA

Victoria DAFAUCE MENENDEZ

Vita VORONECKAITE

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.